Ex Parte 6,945,013 et al

Patent Trial and Appeal Board

Sep 12, 2016

95001452 (P.T.A.B. Sep. 12, 2016)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/001,452 11/24/2010 6,945,013 415545US 110 RX 7633
22850 7590 09/13/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
DAWSON, GLENN K
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/13/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

KHS USA, INC.
Requester

v.

STEUBEN FOODS, INC.
Patent Owner
____________

Appeal 2015-007987
Reexamination Control 95/001,452
Patent 6,945,013
Technology Center 3900
____________

Before JAMES T. MOORE, PHILLIP J. KAUFFMAN, and
BRETT C. MARTIN, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL
and
DECISION ON REHEARING
37 CFR § 41.79

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INTRODUCTION
KHS USA, Inc. (“Requester”) filed a corrected request for
inter partes reexamination (“IP Reex. Req.”) of claims 1–20 of U.S.
Patent No. 6,945,013 (“the ’013 patent”) on November 24, 2010.
Steuben Foods, Inc. (“Patent Owner” or “Appellant”) added claims
21–65 during prosecution, also canceling claims 36 and 40–43.
Claims 1, 4–21, 24–27, 29–35, 37–39, and 44–65 stand rejected and
are the subject of this appeal. Patent Owner Appeal Brief (“PO App.
Br.”) 1. Claims 2 and 3 are confirmed, while Claims 22, 23 and 28
are found to be patentable as amended. Right of Appeal Notice,
September 10, 2014 (“RAN”), form PTOL-2066.
On December 24, 2014, the Patent Owner filed its Appeal Brief
(“PO App. Br.”). On January 7, 2016, Patent Owner sought
postponement of the oral hearing, which was denied. On January 14,
2016, Patent Owner sought remand of the proceeding to the Examiner
by way of a Petition to the Chief Judge, which was also denied
(“CAPJ Pet. 1”). A Respondent Brief was filed by the Requester on
March 4, 2015 (“Resp. Br.”). Patent Owner filed a Rebuttal Brief July
6, 2015 (“PO Reb. Br.”) and oral argument was conducted February
10, 2015. A transcript of the oral argument is in the record (“Tr.”)
with a date of entry of March 3, 2016.
We rendered a decision March 25, 2016 (“Dec.”). Patent
Owner filed a request for rehearing April 25, 2016 (“Reh’g. Req.”).
Requester filed Comments May 25, 2016 (“Comments”). Patent
Owner filed a Reply (“Reh’g Req. Reply”) as an attachment to a
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Petition to the Chief Judge (“CAPJ Pet. 2”) seeking entry of the Reply
on June 8, 2016. The submission of these various documents
confuses the record on appeal. We therefore determine the record in
this proceeding will be clearer if we reissue our decision, noting the
rehearing issues and making such changes where we deem it to be
appropriate.
We therefore GRANT the request in part in that we withdraw
the prior decision, and reissue it as the present decision. We DENY
the request inasmuch as we decline to alter the final judgment. We
note that this decision contains a new ground of rejection, but is not a
new decision under 37 CFR § 41.79(d), and no further requests for
rehearing are authorized.
We have jurisdiction under 35 U.S.C. § 6(c).
For the reasons that follow, we affirm the rejections of record as
set forth in the Right of Appeal Notice (“RAN”) dated September 10,
2014.

A. Related Proceedings
The ’013 patent is the subject of two terminated board
proceedings, Case IPR2014-00041, GEA Process Engineering, Inc. v.
Steuben Foods, Inc., and Case IPR2014-01235, Nestle USA, Inc. v.
Steuben Foods, Inc. In those proceedings, the petitioner was found
(1) to have filed an incomplete petition for failing to identify all real
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parties in interest,1 and (2) not to have carried its burden of showing
unpatentability, respectively.2 The ’013 patent has also been asserted
in several district court cases in the United States District Court for
the Western District of New York. In addition, the ’013 patent is
related to other United States patents, which are or were the subject of
Office proceedings. PO Br. 1. CAPJ Pet. 2, 1. As noted hereinafter,
those proceedings, while informative, do not govern the conduct of
this proceeding or comprise the record in this proceeding.

B. The ’013 Patent
The ’013 patent is directed to a method and aseptic packaging
system for the aseptic packaging of food products in containers, such
as bottles. Specification 1:10–14. The ’013 patent Specification
discloses the steps of: “providing a plurality of bottles; aseptically
disinfecting the plurality of bottles; aseptically filling the aseptically
disinfected plurality of bottles with the aseptically sterilized
foodstuffs; and filling the aseptically disinfected plurality of bottles at
a rate greater than 100 bottles per minute.” Id. at 3:9–18.

1 IPR2014-00041, Paper 140, 26.
2 Patent Owner characterizes the IPR2014-01235 final written
decision as finding that “claims 18-20 of the ‘013 patent were
patentable.” CAPJ Petition 2, 1. This characterization misstates the
substance of the actual decision in IPR2014-01235. The Board
actually decided that “Petitioner has not shown by a preponderance of
the evidence that claims 18–20 of the ’013 patent are unpatentable.”
IPR2014-01235, Paper 69, pages 2 and 32.

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Additionally, the method provides for the step of aseptically
disinfecting the plurality of bottles at a rate greater than 100 bottles
per minute. Id. at 3:23–24.

C. Claims
Claim 1 is reproduced below:
1. A method for automatically aseptically bottling
aseptically sterilized foodstuffs comprising the steps of:

providing a plurality of bottles;

aseptically disinfecting the bottles at a rate greater
than 100 bottles per minute wherein the disinfecting is
with hot atomized hydrogen peroxide, wherein said
plurality of bottles are in an upright position during
disinfecting; and

aseptically filling the bottles with aseptically
sterilized foodstuffs.
D. The Cited Prior Art
Reference Printed Publication Date
Buchner N. Buchner, Aseptic Glass in the Food
Sector, Pharma Technologie J., at 25
(with translation).
1988
ZFL N. Buchner, Aseptic Filling of Glass
and Plastic Containers, 41 ZFL 295
(with translation).
1990
See
Footnote3

3 The formerly listed Biewendt reference was erroneously included in
the prior chart in the prior decision and forms no part of this decision.
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Reference Printed Publication Date
Bosch

Robert Bosch GmbH, Aseptically
Operating Filling and Closing Lines
for Bottles, Jars and Wide-Mouth
Containers of Glass.
May 1990
Chambers Principles of Aseptic Processing and
Packaging (James V. Chambers &
Philip E. Nelson eds., 2d ed.).
1993
FDA 1 FDA Regulation 21 C.F.R. § 178.1005 1977
Krämer Johannes Krämer, Food Microbiology,
3rd Edition, 1997 Eugen Ulmer GmbH
& Co.
1997
Campden Aseptic Packaging Symposium, Food
Preservation Research Association
April 20,
1983
Rippen “Aseptic Packaging of Grade A Dairy
Products” Food Science Department,
Michigan State University
June 1969
Miyazaki “Development of PET Bottle In-line
Formation Aseptic Filling Line”
Packaging Technology pp. 28–34
August
1998
Willhoft Aseptic Processing and Packaging of
Particulate Foods, Blackie Academic
and Professional
1993
David Aseptic Processing and Packaging of
Food, CRC Press
1995

Consequently, the Patent Owner’s request to have its mistaken
inclusion designated as a new ground of rejection is moot. Reh’g.
Req. 9.
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Reference Patent Number Date
Lisiecki US 3,723,060 March 27, 1973
Wilcox US 3,770,209 November 6, 1973
Hoshino US 4,296,068 October 20, 1981
Bjerborn WO 98/16259 April 23, 1998
Gustafsson WO 98/17579 April 30, 1998
Scholle US 4,417,607 November 29, 1983
Hada US 5,879,648 March 9, 1999
Vokins EP 0 481 361 A1 April 22, 1992
Clüsserath US 5,031,673 July 16, 1991

Appellant has not challenged the prior art status of these
documents.
Inter alia, Appellant also relies upon the declarations of
Mr. Thomas D. Taggart (04-01-2011) (“Taggart I and Taggart II”),
Dr. Norbert Buchner (01-24-2012)(“Buchner I”), Mr. Jeff Sokal (01-
24-2012)(“Sokal I”), Dr. Wouter de Haan (01-24-2012)(“de Haan”),
Mr. Jeff Sokal (11-28-2012)(“Sokal II”), Dr. Sudhir K. Sastry (11-28-
2012)(“Sastry I”), Dr. Philip E. Nelson (11-28-2012)(“Nelson II”),
Dr. Thomas D. Taggert (11-28-2012)(“Taggart III”), and Dr. Philip E.
Nelson (1-24-2012)(“Nelson I”), which we have reviewed.
E. Grounds of Rejection
1. Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bosch and Krämer.
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2. Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bosch and Bjerborn.
3. Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bosch in view of FDA Regulation 21 C.F.R.
§ 178.1005.
4. Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bosch, Bjerborn, and Lisiecki.
5. Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bosch, Bjerborn, and Lisiecki.
6. Claims 1, 4, 5, 7, 8, and 10–17 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Buchner, Campden,
Gustafsson, ZFL, and either Rippen or Krämer.
7. Claims 18–20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Buchner, Campden, Gustafsson, ZFL, and
either Rippen or Krämer.
8. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Buchner, Campden, Gustafsson, ZFL, either Rippen
or Krämer, as applied to claim 5, and further in view of Miyazaki or
Willhoft.
9. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Buchner, Campden, Gustafsson, ZFL, and either
Rippen or Krämer, as applied to claim 5, and further in view of
Willhoft or Scholle.
10. Claims 21, 24, and 25 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Buchner in view of Campden,
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Gustafsson, ZFL, and either Rippen or Krämer, as applied to claim 20
above, and further in view of Lisiecki.
11. Claims 26 and 29 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over ZFL, Krämer, Lisiecki, and Campden.
12. Claims 30, 31, 33, 34, 38, and 39 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Bosch, Lisiecki,
Buchner, Bjerborn, Gustafsson, and Willhoft.
13. Claims 30, 31, 33, 34, 35, and 39 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over ZFL and Gustafsson.
14. Claim 32 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over ZFL and Gustafsson, as applied to claim 30, and
further in view of David.
15. Claim 21 stands rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over ZFL, Hada, and Bjerborn.
16. Claim 24 stands rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over ZFL, Hada, Bjerborn, and Vokins.
17. Claim 25 stands rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over ZFL, Gustafsson, Clüsserath, Bjerborn,
and Lisiecki.
18. Claim 26 stands rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over ZFL, Bjerborn, and Lisiecki.
19. Claim 29 stands rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over ZFL, Bjerborn, Lisiecki, and Vokins.
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20. Claims 30, 31, 33, 34, 35, 38, 39, 51, 53, 55, 58, and 60
stand rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over ZFL and Bjerborn.
21. Claim 32 stands rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over ZFL, Bjerborn, and David.
22. Claim 44 stands rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over ZFL, Clüsserath, and Gustafsson.
23. Claim 45 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over ZFL, Lisiecki, Hoshino, Wilcox, and
Bosch.
24. Claims 46, 47, and 48 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over ZFL and Bosch.
25. Claims 50, 52, 54, 57, 59, 62, 63, 64, and 65 stand rejected
under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over ZFL.
26. Claims 26, 29, 44–48, 60, 64, and 65 stand rejected under
35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as
failing to comply with the written description requirement.
27. Claims 25–27, 29–35, 37–39, 49, 55, 56, 60, and 61 stand
rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA),
second paragraph.
28. Claims 59–63 stand rejected under 35 U.S.C. § 314(a) as
enlarging the scope of the claims of the patent being reexamined.
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ANALYSIS
A. 35 U.S.C. § 112
1. (Rejection 26) Claims 26, 29, 44–48, 60, 64, and65 stand
rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first
paragraph, as failing to comply with the written description
requirement.
The Examiner concluded that the claims contain subject matter
that was not described in the Specification in such a way as to
reasonably convey to one skilled in the relevant art that the inventor
had possession of the claimed invention. RAN 106–107. The
conclusion is founded on those facts found at RAN 107–108.
Appellant has not made any argument directed towards this
rejection, and indicated at oral argument that this was intentional. Tr.
69–70. Accordingly, any argument is waived and this rejection is
affirmed.
2. (Rejection 27) Claims 25–27, 29–35, 37–39, 49, 55, 56, 60,
and 61 stand rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112
(pre-AIA), second paragraph.
The Examiner concluded that the claims are indefinite for
failing to particularly point out and distinctly claim the subject matter
which the applicant regards as the invention. RAN 108–109. The
conclusion is founded on facts found at RAN 109–110.
Appellant has not made any argument directed towards this
rejection, and indicated at oral argument that this was intentional. Tr.
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69–70. Accordingly, any argument on this issue is waived and this
rejection is affirmed.

B. 35 U.S.C. § 314(a)
1. (Rejection 28) Claims 59–63 stand rejected under 35 U.S.C.
§ 314(a) as enlarging the scope of the claims of the patent being
reexamined. RAN 110. The Examiner found that the use of the term
“about” enlarges the scope of the claims. RAN 110–111.
Appellant has not made any argument directed towards this
rejection, and indicated at oral argument that this was intentional. Tr.
69–70. Accordingly, any argument on this issue is waived and this
rejection is affirmed.
As a consequence, we dismiss as moot the appeal of claims 25–
27, 29–35, 37–39, 44–48, 49, 55, 56, and 59–65 from any other issues
in this proceeding. This includes rejections 12–14, 17–19, and 21–24,
as indicated below.

C. The Effect of the Related Proceedings
We are presented with an issue to resolve at the outset of this
proceeding. During the Oral Argument on February 10, 2016,
Appellant’s counsel asserted that the Board’s prior decisions in
IPR2014-00041 and IPR2014-01235 are “the law of the case” and that
we should follow their findings and conclusions. Tr. 4–5 (citing the
“Board Standard Operating Procedure 6B”). In its briefs, Appellant
Patent Owner references papers and evidence in the inter partes
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review proceedings, which adds a degree of confusion to the record as
some of this evidence and argument is not properly in the record.
For the reasons that follow, we disagree with Appellant’s
assertion of a preclusive effect on our proceeding, and look at the
judgment of the final written decision in IPR2014-01235 solely as
informative to our deliberations in this matter. Our reasoning follows.
Appellant has not identified any persuasive authority for the
“law of the case” argument under the facts of this case. See Tr. 4–5
(citing the “Board Standard Operating Procedure 6B”). The Board
does not have a Standard Operating Procedure 6B; however, based on
content, it appears Appellant is referring to Standard Operating
Procedure 2, which states that a routine Board opinion is “binding law
of the case, even if it is not designated as precedential, informative, or
representative.” SOP 2 ¶ VI.B. (Revision 9) (emphasis added).4 In
context, this statement means that a routine Board opinion is a binding
determination for that proceeding.
This statement says nothing about the applicability of a routine
opinion to other proceedings. See SOP 2, ¶ III.E (in contrast to a
routine opinion, a precedential opinion “is binding authority in
subsequent matters involving similar facts or issues.”). Further, this
SOP is not legal precedent. SOP 2, 1 (“This SOP creates internal
norms for Board administration; it does not create any legally
enforceable rights.”).

4 Attached to this decision as an Appendix.
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GEA Process Engineering, Inc., was the Petitioner in IPR2014-
00041. The ’041 petition was determined to be incomplete based
upon a failure to identify the real party in interest in violation of
35 U.S.C. § 312(a). Accordingly, that proceeding was terminated and
the initial decision instituting vacated. IPR2014-00041, Paper 140,
pp. 26–27.
As the requester in this proceeding is an entirely different party,
Patent Owner has not persuaded us that there can be a preclusive
effect as regards IPR2014-00041.
Likewise, there can be no preclusive effect as regards IPR2014-
01235. Nestle USA, Inc. is the petitioner in IPR2014-01235 while the
present Requester is not Nestle. As noted above “litigants . . . who
never appeared in a prior action[] may not be collaterally estopped
without litigating the issue. . . . Due process prohibits estopping them
despite one or more existing adjudications of the identical issue which
stand squarely against their position.” Blonder-Tongue Labs., Inc. v.
Univ. of Ill. Found., 402 U.S. 313, 329 (1971); see also Parklane
Hosiery Co., v. Shore, 439 U.S. 322, 327 n.7 (1979) (“It is a violation
of due process for a judgment to be binding on a litigant who was not
a party or a privy and therefore has never had an opportunity to be
heard.”).
We also observe that Nestle USA, Inc. has filed at the Board a
notice of appeal to the United States Court of Appeals for the Federal
Circuit, dated February 8, 2016, and accordingly that decision could
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not have a preclusive effect at this time for that additional reason.
IPR2014-01235, Paper 67.
Moreover, there is not identity of issues between IPR2014-
01235 and the case at hand. IPR2014-01235 resulted in a judgment
that the Petitioner in that proceeding had not shown by a
preponderance of the evidence that claims 18–20 of the ’013 patent
are unpatentable under 35 U.S.C. § 103 over Biewendt, Bosch,
Buchner5, ZFL, and Chambers. IPR2014-01235, Paper 63. In the
case at hand, none of the rejections, including rejections 2, 3, and 7
against claims 18–20, are based on this particular combination of
references.
Additionally, a reexamination proceeding appeal from findings
made by an Examiner in a reexamination proceeding is in a different
procedural posture than a trial proceeding. That is, the showing
required by an Examiner in a reexamination proceeding is not
identical to the showing required of a petitioner in an inter partes
review. For example, the Examiner, who makes the initial findings of
fact and conclusions of law, is not a party with an interest in the
outcome and is presumed correct in the reexamination proceeding,
unless error is shown by Appellant during the appeal. Further, the

5 Notably, “Buchner” is a different reference in the two proceedings.
Specifically, “Buchner” in this proceeding is an article entitled Aseptic
Production and Filling Methods in the Pharmaceutical and Foodstuff
Industires while “Buchner” in IPR2014-01235 is an article entitled
Aseptic Glass in the Food Sector.

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proceedings are governed by different rules. See 37 C.F.R. Part 41
(reexamination) and Part 42 (inter partes review).
In a reexamination proceeding, the Examiner also has the
ability to establish certain presumptions during prosecution and
occasionally can shift the burden of proof when making rejections.
For example, in proving criticality of result effective variables, the
Examiner can shift the burden to the applicant. In re Boesch,
617 F.2d 272, 276 (CCPA 1980); In re Aller, 220 F.2d 454, 456
(CCPA 1955). As an Examiner has no access to laboratories, a patent
owner or applicant can legitimately be placed in the position of being
required to prove differences between the cited art and the claimed
invention. The same extends to enablement of a prior art publication
or patent. In re Antor Media Corp., 689 F. 3d 1282, 1289 (Fed. Cir.
2012).
Additionally, the entered evidence of record for this proceeding
is different. In IPR2014-01235, the Board and Petitioner relied upon
Buchner, ZFL, Biewendt, Bosch, and Chambers. Paper 69, p. 5.
While those references provide some overlap, the present record also
includes Krämer, Campden, Rippen, Miyazaki, Willhoft, David,
Lisiecki, Wilcox, Hoshino, Bjerborn, Gustafsson, Scholle, Hada,
Vokins, and Clüsserath. These references are applied differently over
multiple rejections.
Moreover, the claims in this proceeding are different from the
claims in IPR2014-01235. Patent Owner has availed itself of the
opportunity to add further claims and to make some amendments in
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this proceeding, whereas we have not been pointed to corresponding
granted motions to amend in the IPR proceeding. As our reviewing
court has said, “[d]uring patent prosecution is when claims can be
amended, ambiguities should be recognized, scope and breadth of
language explored, and clarification imposed.” In re Zletz, 893 F.2d
319, 322 (Fed. Cir. 1989).
Accordingly, we again decline the invitation of Appellant
Patent Owner’s counsel to decide this case based upon the claim
interpretation, evidence, and outcome in a different case. We
therefore consider only the evidence and argument before the
examiner that has been properly entered and considered. Citations in
Appellant’s brief to the IPR papers and IPR evidence that are
unentered have not been considered.6
The final written decision in IPR2014-01235 is part of the ’013
history. Although claims 18–20 are at issue in both proceedings, the
ground of unpatentability in IPR2014-01235 differs from the
rejections presented here. Also as mentioned above, the record in

6 Portions of Appellant’s briefs make factual assertions, then cite to
pleadings in other proceedings along with evidence from those
proceedings. We have not considered those citations not properly
within this record, relying only upon the evidence of record of this
proceeding. To the extent evidence not considered by the Examiner
has been placed into the record, we consider those to be unauthorized
papers not forming part of the record. 37 C.F.R. § 1.939(a).
Similarly, arguments made during oral argument in this case that rely
upon evidence not of record have not been considered. 37 C.F.R.
§ 41.73(e)(1).
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IPR2014-01235 differs from the case at hand. For these reasons, the
final written decision in IPR2014-01235 has no substantive effect on
the patentability of the ’013 patent claims in this case.7

D. Principles of Law – Obviousness
A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
differences between the claimed subject matter and the prior art are
such that the subject matter, as a whole, would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 406 (2007).
“[A] patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art.” KSR, 550 U.S. at 418. “[I]t can be important
to identify a reason that would have prompted a person of ordinary
skill in the relevant field to combine the elements in the way the
claimed new invention does.” Id. Moreover, “[i]n order to render a
claimed apparatus or method obvious, the prior art must enable one
skilled in the art to make and use the apparatus or method.” Beckman
Instruments, Inc. v. LKB Produkter, AB, 892 F.2d 1547, 1551 (Fed.

7 Patent Owner repeatedly urges that the separate inter partes review
proceedings should govern in claim construction and the claim
construction in this proceeding “cannot be reconciled.” CAPJ Petition
2, 2–3. This position fails to address, inter alia, the fact that this
proceeding is a reexamination proceeding, and the claims, references,
and rejections are not identical.
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Cir. 2010) (citing In re Payne, 606 F.2d 303, 314 (CCPA 1979)). In
addition, a person of ordinary skill in the art must have had a
reasonable expectation of success of doing so. PAR Pharm., Inc. v.
TWI Pharms., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014).

E. The Obviousness Rejections
1. “Aseptic”
To facilitate our analysis, we divide the rejections into three
groups based upon the initial reference relied upon, namely, Bosch,
Buchner, and ZFL. Before addressing each grouping, we address
proper interpretation of “aseptic” as claimed.
The primary dispute regarding interpretation of aseptic as
claimed relates to the residual hydrogen peroxide limition (i.e., after
the bottles are aseptically disinfected, the residual level of hydrogen
peroxide must be less than 0.5 PPM, “the residual requirement”).
This limitation is explicit in claims 20, 21, 25, 26, 39, 55, 56, and 60,
but is not explicit in other claims, such as claim 18. To illustrate,
claims 18 and 20 follow:
Claim 18
18. A method for automatically aseptically bottling
aseptically sterilized foodstuffs comprising the steps of:
providing a plurality of bottles;
aseptically disinfecting the bottles at a rate greater
than 100 bottles per minute; and
aseptically filling the bottles with aseptically
sterilized foodstuffs, wherein the aseptically sterilized
foodstuffs are sterilized to a level producing at least a 12
log reduction in Clostridium botulinum.
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Claim 20
20. A method for automatically aseptically bottling
aseptically sterilized foodstuffs comprising the steps of:
providing a plurality of bottles;
aseptically disinfecting the bottles at a rate greater than
100 bottles per minute, wherein the disinfecting the bottles is
with hot hydrogen peroxide spray, wherein a residual level of
hydrogen peroxide is less than 0.5 PPM; and
aseptically filling the bottles with aseptically sterilized
foodstuffs.
Appellant contends that claims that do not explicitly recite the
residual requirement but require aseptically disinfecting bottles (e.g.,
claim 18) still include the residual requirement based on the meaning
of “aseptic.” For the reasons that follow, we disagree with this claim
construction.
We first focus on the claimed subject matter. Claim 18 is a
broad independent claim, claiming any method of providing bottles,
sterilizing the bottles at the specified rate, and filling them aseptically
with foodstuff sterilized to a level producing at least a 12 log
reduction in Clostrium botulinum. Claim 20, also an independent
claim, is more of a species of disinfection, claiming the use of hot
hydrogen peroxide spray with a specific residual hydrogen peroxide
level. We deem these claims representative.
Appellant urges that aseptic means “‘the FDA level of aseptic’
which in turn at the time of filing required no more than 0.5 ppm
residual hydrogen before the bottles are filled.” PO Br. 16. Appellant
further asks that we interpret “aseptic” as specifically as the Board did
in IPR2014-01235, to mean “aseptic to any applicable United States
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FDA standard, and in the absence of any such standard, aseptic
assumes its ordinary meaning of free or freed from pathogenic
microorganisms.” We are cited to IPR2014-01235, Paper 63, 11–14.
We think this interpretation imports much into the claim
language that is not written there. The Specification expressly teaches
only the FDA level of aseptic. The Specification does not state the
definition requires a particular residual level of hydrogen peroxide or
other ingredients that might have been banned from foodstuffs by the
FDA. Nor does claim 18 necessarily expressly require aseptically
disinfecting through use of hydrogen peroxide. Claim 20, on the other
hand, does.
The Specification specifically gives us guidance — aseptic
means “the FDA level of aseptic.” ’013 Patent 4:24–30.
Original claim 20 specifically recites the step of “aseptically
disinfecting the bottles at a rate greater than 100 bottles per minute,
wherein the disinfecting the bottles is with hot hydrogen peroxide
spray, wherein a residual level of hydrogen peroxide is less than 0.5
PPM.” If “aseptically” naturally carried the panoply of FDA
restrictions with it, then the residual level of hydrogen peroxide used
with hydrogen peroxide sterilization would be somewhat redundant.
See also claims 21, 25, and 26 each reciting a level of residual
sterilant.
It is the applicants’ burden to precisely define the invention, not
the PTO’s. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).
Appellant could have amended the claims during this proceeding to
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recite a more precise standard, but chose not to include any such
amendment to these claims, although the record reflects that Appellant
did make some amendments to other claims. We are therefore left
with potentially alternate interpretations.
Under Appellant’s favored interpretation, “aseptic” means in
compliance with any applicable FDA standard, triggering, e.g., the
residual hydrogen peroxide limitation. Under the broader
interpretation, unrecited FDA requirements would not be included.
The claim language itself is ambiguous on this point.
Each of the rejection groupings contains a claim that explicitly
includes the residual requirement, and for these claims, the Examiner
addressed that requirement. Specifically, as is detailed below, in the
Bosch and ZFL rejections, the Examiner relied on Bjerborn, and in
Buchner rejections the Examiner relied on Buchner. For those claims
that do not explicitly contain the residual requirement, we modify the
outstanding rejection to address the limitation as the Examiner did for
the claims that explicitly contain the residual requirement. As a
consequence, we designate these grounds so modified as new grounds
of rejection.
For purposes of this decision, we conduct our analysis using
Appellant’s construction, namely, that aseptic” means “aseptic to any
applicable United States FDA standard, and in the absence of any
such standard, aseptic assumes its ordinary meaning of free or freed
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from pathogenic microorganisms.”8 However, this does not alter the
outcome of this appeal, as the evidence of record has shown that the
proposed combination of references teaches the residual hydrogen
peroxide limitation.9
Generally, speaking, Appellant’s argument regarding the
express or inherent residual sterilent requirement is that the skilled
artisan could not navigate the narrow path between sterilization and
residual H2O2 in the FDA requirements. PO Br. 34–35. In support of
this contention, Appellant cites David 42–43. Given how difficult the
reference is to read in the record, we reproduce the section cited
hereinbelow:
E. Hazard Analysis Critical Control Point Approach

The hazard analysis critical control point (HACCP)
system has been successfully applied by the FDA to the
regulation of acidified or low-acid canned foods. A recent
report by the Food and Nutrition Board Subcommittee on
Microbiological Criteria recommended the HACCP
system be applied by industry and regulatory agencies to
all U.S. food protection programs. The introduction of
UBT products, aseptically packed in containers other than

8 This is the claim construction applied in IPR2014-01235.
9 Appellant urges in the request for rehearing that observing the
existence of an ambiguity in the claim warrants a determination that
this is a new ground of rejection and a return to the Examiner. Reh’g
Req. 9–11. We are unpersuaded that simply observing that the claims
may actually be broader than the Patent Owner asserts warrants a
determination that this statement constitutes a new ground of rejection
to the claims.

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glass jars or metal cans in the United States was delayed
by several years because of the FDA’s different and more
comprehensive requirements.

[TABLE OMITTED]

It took more than 2 years for the FDA to approve
the use of hydrogen peroxide for the sterilization of
packaging materials. When the FDA finally granted the
petition for the use of hydrogen peroxide, it set maximum
residue levels at 0.5 ppm (originally it was 0.1 ppm). As
a consequence, U.S. processors must concern themselves
with maximum hydrogen peroxide levels, as well as
minimum levels, to ensure proper sterilization. The
resulting effect of these regulations is a much lower
peroxide level in the U.S. as compared to the rest of the
world, and a greater potential for the production of
defective containers due to an insufficient amount of
peroxide for proper sterilization.

We do not find that this passage supports the statement that
much of the difficulty in the industry is finding the “narrow path”
between sterility and residual requirements. This passage instead
illustrates that one of ordinary skill in the art was aware of the need
for sufficient sterilization, which had to be balanced against the FDA
residual hydrogen peroxide requirements, by adjusting the known
result-effective process parameters.
Accordingly, Appellant’s argument concerning the level of
residual sterilent is generally unpersuasive for the above reaons. This
analysis applies to all of the claims that explicitly or implicitly include
the residual requirement.

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2. Bosch (Rejections 1–5 and 12)
(Rejection 1) Claims 18 and 19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Bosch and Krämer.
(Rejection 2) Claim 20 stands rejected under 35 U.S.C. § 103(a)
as being unpatentable over Bosch and Bjerborn.
(Rejection 3) Claim 20 stands rejected under 35 U.S.C. § 103(a)
as being unpatentable over Bosch in view of FDA Regulation
21 C.F.R. § 178.1005.
(Rejection 4) Claim 21 stands rejected under 35 U.S.C. § 103(a)
as being unpatentable over Bosch, Bjerborn, and Lisiecki.
(Rejection 5) Claim 24 stands rejected under 35 U.S.C. § 103(a)
as being unpatentable over Bosch, Bjerborn, and Lisiecki.
(Rejection 12) Claims 30, 31, 33, 34, 38, and 39 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Bosch, Lisiecki,
Buchner, Bjerborn, Gustafsson and Willhoft. As these claims all have
been found unpatentable under either the unappealed 35 U.S.C. § 112
and § 314 rejections, we dismiss this appeal as to this rejection.
As discussed above, rejections 1 and 3 are modified to include
reliance on Bjerborn for the residual requirement just as relied for
claim 20 of rejection 3.

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a. Rejection 1 - Bosch and Krämer – Claims 18 and 1910
The Examiner found that Bosch alone describes bottles,
disinfecting the bottles, and “aseptically filling the bottles with
aseptically sterilized” foodstuffs. Request 37.
Krämer was found to describe reduction of Clostridium
botulinum by 12 log in sterilized foods. Id. at 38. The Examiner then
concluded that
one skilled in the art would be motivated to combine the
teachings from Bosch with Krämer as both references are
directed to the same technological field and subject
matter which is aseptic processing of bottles and filling
of bottles with sterilized food. Bosch relates to aseptic
processing of food and therefore one skilled in the art
would be motivated to apply the teachings of Krämer to
reduce the level of microorganisms in Bosch.

Id.
The Examiner also further concluded that reaching or obtaining
a specific value is not patentable subject matter when it involves only
routine experimentation by the skilled artisan, and that routine
experimentation by one skilled in the art would be able to achieve the
claimed value of “‘producing at least a 12 log reduction in

10 Appellant urges that the original combined discussion of claim 20
along with claims 18 and 19 warranted the designation of this
discussion as a new ground of rejection. Reh’g Req. 10. We have, as
a consequence, separated out the discussion of claim 20, separately
rejected, in this decision on rehearing.
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Clostridium botulinum’ as the value is well known in the art and the
prior art teaches how to attain and test for the value.” Id.
Appellant first argues that one of ordinary skill in the art would
not have had a reasonable expectation of success in making the
combination. PO Br. 9–10. More specifically, Appellant urges one
could not reach the speeds of 100 bottles per minute as claimed. Id.
The gravamen of this assertion is that the technology is highly
unpredictable. Id.
The first argument in this regard is that low acid aseptic bottling
is unpredictable. PO Br. 10. The principal reason that this argument
is unpersuasive is that the evidence relied upon is not evidence. We
are referenced by Appellant Patent Owner to Patent Owner’s own
pleading in IPR2014-00041, Paper 40, which is a Patent Owner’s
Response in the IPR proceeding, as if it were evidence. That
document is a collection of attorney argument, citing to additional
evidence, improperly incorporating additional argument by reference.
We therefore are unpersuaded by the arguments spanning pages 10–
14 of Patent Owner’s brief.
Appellant next urges that the Bosch reference machine was a
trade secret, and the prior art gave no reasonable expectation of
success in improving upon the machine. PO Br. 16.
Buchner Declaration
Testimony in support of this argument is provided by
Dr. Buchner, who “admitted that he deliberately omitted from his
publications any design parameters which would have allowed others
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to successfully build competing machines.” PO Br. 9; citing Buchner
Decl. at ¶ 18.
Appellant urges that we credit the testimony of Dr. Buchner on
this point. PO Br. 16. The Examiner found it to be unpersuasive.
RAN 20–22. Specifically:
Dr. Buchner only states that many features need to be
considered, and anticipating all problems that may arise when
adding lines is not possible. These statements fail to be
persuasive as to non-enablement via undue experimentation and
also fail to provide any persuasive evidence of nonobviousness.
RAN 22.

Patent Owner points us to Dr. Buchner’s declaration at
paragraph 18 where it is urged he deliberately omitted from his
publications any design parameters thatwould have allowed others to
build competing machines. Br. 9.
Looking at this declaration11 we find ourselves in agreement
with the Examiner’s observation that the factual statements in the
declaration are non-persuasive. Moreover, these statements simply
do not support the principal point urged by Appellant’s counsel. We
are provided with such vague statements that “there are many features

11 Appellant urges in the request for rehearing that an observation on a
witness’s credibility warrants the determination that this renders the
rejection a new ground of rejection. Reh’g Req. 4–5. That argument
is meritless. Any declaration submitted to the Office with the
expectation that it may be relied upon has its probative value assessed,
including whether the witness is interested. MPEP 716.01(c).
However, to simplify the issues, we omit that prior analysis.

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that you need to consider” and “[i]t is not possible to anticipate all [of]
the problems that may arise when expanding the size of a machine and
adding additional lines” are provided. Buchner ¶¶ 21 and 22.
That a general disclosure resulted in some engineering work to
implement does not mean that one of ordinary skill in the art could not
have reasonably implemented the subject matter of the claimed
invention.12
When viewed in light of the Bosch reference, we find it hard to
give persuasive weight to counsel’s assertion that this art was
unpredictable and the challenges to success rendering an expectation
of success unreasonable. For example, the first figure of Bosch

12 Appellant also asserts that any additional observations made in the
Decision regarding the declaration requires designation of a new
ground of rejection. Reh’g Req. 4–5. Relying upon In re Stepan, 660
F.3d 1341, 1344 (Fed. Cir. 2011), Appellant urges the proposition that
any new critiques of declaration evidence mandate a new ground of
rejection. Stepan made no such blanket statement. In Stepan, the
Board sua sponte found a reference to be prior art under 35 U.S.C.
§ 102(a), which changed the rejection in question from a 35 U.S.C.
§ 103(a) rejection based upon a reference that qualified as a reference
under 35 U.S.C. § 102(b). Ex Parte Stepan, Appeal 2009-009534,
Slip. Op. 9–12. (BPAI 2009). The declaration previously presented
was then, for the first time, analyzed in detail by the Board in this
context and found to be ineffective on appeal. Id. 12–16. In the
present instance, the declaration in question persuaded neither the
Examiner nor the Board, and Appellant urges us on appeal to consider
the declaration. We therefore decline the invitation to denominate our
review of the declaration as a new ground of rejection, although we
have simplified our analysis to more closely track the observations of
the Examiner.
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indicates the general layout of the machine. In the description on
page 1, we are informed that sterilization can occur by air or steam in
acid products, while hydrogen peroxide is used for low acid products.
Drying occurs using sterile air.
The aseptic machine is described as flushing the bottles inside
and outside with H2O2 and subsequently drying with sterilized air.
Bosch p. 2. Sterilization machines of 6–80 lines are described, with
outputs ranging from 6000–12000 bottles per hour.
The functional diagram on page 3 of Bosch describes and
illustrates the layout of a feed transfer, bottle sterilization infeed,
bottle sterilization unit, discharge, 2 lane transport of bottles to filler,
aseptic in line filler, closing machine, discharge for closed bottles, and
lid sterilizer. Bosch p. 3.

The Figure from Bosch Page 3 is a perspective illustration of an
aseptic filling machine
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That Dr. Buchner’s publications were checked by his employer
to keep certain trade secret engineering details private for commercial
advantage does not address the central issue, as noted above. PO Br.
16. Indeed, none of those critical engineering details is recited in
claim 18, 19, or 20.
We instead, as the Examiner did, focus on whether one of
ordinary skill in the art could engineer a method for automatically
aseptically bottling aseptically sterilized foodstuffs by providing a
plurality of bottles; aseptically disinfecting the bottles at a rate greater
than 100 bottles per minute; and aseptically filling the bottles with
aseptically sterilized foodstuffs, wherein the aseptically sterilized
foodstuffs are sterilized to a level producing at least a 12 log reduction
in Clostridium botulinum. We also consider whether one could do it
with a reasonable expectation of success given the guidance in Bosch
and Krämer.
Appellant’s counsel characterizes the rejection as an “obvious
to try” rejection where the art shows only a “general approach” PO
App. Br. 17. The evidence of record does not support that narrow
view as argued. A concrete arrangement of elements is given in
Bosch with the particular level of aseptic details in Krämer at 165.13

13 Appellant’s counsel asserts that this discussion of what the art
describes requires designation of a new grounds of rejection. Reh’g
Req. 12. That we look to the art of record and consider it in view of
Appellant’s argument concerning what it shows does not warrant a
determination that this is a new ground of rejection.

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Appellant’s counsel next argues that the Examiner erred and
relied upon the machine described in Bosch because the literature
intentionally omitted the technical details necessary to achieve that
functionality. PO Br. 18. Principal in that position is that Bosch does
not describe the means for applying and removing sterilant in order to
meet the FDA requirement of residual hydrogen peroxide. Id. This
argument is no longer relevant given the reliance on Bjerborn for this
teaching. Bjerborn, already of record in this proceeding, teaches that
following disinfecting of plastic containers using hot hydrogen
peroxide spray to a level producing a 5 log reduction B. subtilis,
(which is >10 log reduction of C. botulinum), the residual level of
hydrogen peroxide is less than 0.5ppm. See, e.g. RAN 77.
b. Rejection 2 – Claim 20
Claim 20 is also rejected over Bosch, but in view of either
Bjerborn or FDA regulation 21 C.F.R. § 178.1005, rather than
Krämer. The Examiner expressly found that Bjerborn teaches that
following disinfecting of plastic containers using hot hydrogen
peroxide spray to a level producing a 5 log reduction B. subtilis,
(which is >10 log reduction of C. botulinum), the residual level of
hydrogen peroxide is less than 0.5ppm. RAN 77. The Examiner
concluded that it would have been obvious to have disinfected Bosch's
bottles such that there is less than 0.5 ppm residue in the bottle so as
not to contaminate the foodstuff. Id. We therefore are unpersuaded as
regards the hydrogen peroxide concentration side of the argument.
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Appellant further urges, generally, that there was “no evidence
of record” establishing that the machine was known. PO Br. 19. This
argument again misfocuses the analysis. One of ordinary skill in the
art at the time the invention was made was generally familiar with
bottling and sterilization machines, as illustrated by the totality of the
art of record cited in the tables above. It is with the knowledge of
such a person, given Bosch’s description and Bjerborn’s specifics,
that the claimed invention of claim 20 is rendered obvious.
In other words, Appellant focuses on individual references and
their individual deficiencies, and systemically fails to address the
underlying ability of one of ordinary skill in the art in view of the
entirety of the evidence of record.
Appellant next urges that the disinfection rates claimed are not
obvious. PO Br. 20. The thrust of this argument is that the references
do not provide any explanation as to how the addition of parallel
processing lines would be achieved. PO Br. 21. Although this
argument appears to be principally directed at the second grouping of
rejections, there is some overlap in the claims of the argument with
the rejection presently being discussed. Accordingly, we consider that
argument as regards this rejection as well.

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Taggart Declaration14
The evidence relied upon in support of this contention is the
declaration of Thomas Taggart (dated November 27, 2012) (“Taggart
III”). According to Appellant, the information contained in the Bosch
publication was not sufficient for him “to even begin the design
process of an aseptic bottle filler.” PO Br. 21 (citing Taggart III ¶¶
17–20).
Mr. Taggart testifies in his declaration that “[b]ased upon the
disclosure of Dr. Buchner’s article, I would not know how to build an
aseptic bottling machine without years of experimentation.” Taggart
III ¶ 18.
Mr. Taggart further testifies that his “criteria for the invention
included that it meet the FDA regulations and 3-A standards.” Id. ¶ 5.
He also testifies that other factors were considered including
minimizing the mechanical parts within a sterile zone;
assuring that the air entering the machine is sterile
(filtered); assuring that the air pressure compared to
outside air is maintained as positive; assuring minimal
collection of spore organisms by having a smooth bottle
design; assuring minimal collection of spore organisms on
the neck of the bottle through neck design of the bottle;
placing the sterilant on at minimum levels for quick easy
removal; choosing a material with appropriate properties
for construction of the tunnel; minimizing outside
environmental contact at the bottle infeed, the incoming

14 Appellant urges on rehearing that the Taggart declaration cannot be
measured on appeal as to credibility. We disagree. See, e.g. MPEP
716.01(c). However, to simplify the issues, we omit that prior
analysis as it is unnecessary to the decision.
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lid point and the output of the bottles; assuring that the
bottle conveying mechanism never leaves the sterile
tunnel; and implementing indexing stations into the
design.
Id. ¶ 6.
Like the FDA regulations and 3-A standards, we observe that
none of these considerations is expressly in the limitations of claim
20, nor does our interpretion of “aseptic” to mean to any applicable
FDA standard read such limitations into the claim.
We do not agree that the evidence of record supports
Appellant’s assertion that one would not even know “where to begin”
to design such a machine, as the basic layout from which one of
ordinary skill in the art might choose to begin is presented in Bosch.
The Examiner correctly observed that the declaration was filled with
conclusory stements not supported by factual data or experiment.
RAN 43.
For example, paragraphs 21 and 22 of Taggart III state that:
21. Buchner merely states that the entire plant has
completely closed aseptic spaces that are subject to a slight
overpressure of sterile air or incoming steam in the sealing region
without explaining how to achieve the overpressure. (Id. at pg.
8).

22. Such little disclosure is akin to telling an automotive
engineer to build an automobile that gets over 100 mile per
gallon based upon a publication that states a car has been made
that can get 100 miles per gallon and the publication shows you
a picture of a car and states it uses gasoline and an engine.

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This pair of assertions, among others, highlights the principal
nature of the objection raised by the Examiner to the conclusory
nature of the declaration by using implications in place of facts.
First, paragraph 21 seems to imply that it was not known in the
prior art how to achieve an overpressurized sterile space. Based upon
the evidence in the record (Buchner, p. 7 describes the “entire plant
has completely closed aseptic spaces that are subject to a slight
overpressure of sterile air”; ZFL, p. 7 “[t]his entirely closed system
which is aerated by a slight overpressure of sterile air”) indicates that
such standard spaces were already known.
Second, paragraph 22 seems to imply that one of ordinary skill
in the art would not rely upon those things known in the art, which is
ignoring well over a century of automotive technology and the known
design parameters of a car.
Simply put, we find no error in the Examiner’s conclusion that
this testimony was not persuasive, and does not support Appellant’s
argument that Taggart could not even begin the design process of an
aseptic bottle filler. Br. 21.15 Dr. Sastry’s declaration fails to

15 Appellant urges that the Board’s reasoning in the initial decision
changed the thrust of the rejection. Reh’g Req. 5. We have amended
the decision to more clearly illustrate the origins of this discussion in
the Examiner’s rejection of record. We therefore decline to
denominate this discussion as a new ground of rejection.

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adequately or persuasively address the cited art in this rejection and is
likewise unpersuasive.16
As far as we can tell from Appellant’s briefs, this appears to
constitute the argument concerning claims 18, 19, and 20 and the
dependent claims 21 and 24, to wit, rejections 1-5 and 12. We remain
unpersuaded of error. As a consequence, we affirm these rejections.
Rejection 1, the rejection of claims 18 and 19, is designated as a new
ground of rejection.
2. Buchner (Rejections 6–10)
(Rejection 6) Claims 1, 4, 5, 7, 8, and 10–17 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Buchner,
Campden, Gustafsson, ZFL, and either Rippen or Krämer.
(Rejection 7) Claims 18–20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Buchner, Campden, Gustafsson,
ZFL, and either Rippen or Krämer.
(Rejection 8) Claim 6 stands rejected under 35 U.S.C. § 103(a)
as being unpatentable over Buchner, Campden, Gustafsson, ZFL,
either Rippen or Krämer, as applied to claim 5, and further in view of
either Miyazaki or Willhoft.
(Rejection 9) Claim 9 stands rejected under 35 U.S.C. § 103(a)
as being unpatentable over Buchner, Campden, Gustafsson, ZFL, and

16 Appellant urges on rehearing that the Sastry declaration cannot be
measured on appeal as to credibility. Reh’g Req. 6. We disagree.
See, e.g., MPEP § 716.01(c). However, to simplify the issues, we
omit that prior analysis as unnecessary to the decision.
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either Rippen or Krämer, as applied to claim 5, and further in view of
either Willhoft or Scholle.
(Rejection 10) Claims 21, 24, and 25 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Buchner in view of
Campden, Gustafsson, ZFL, and either Rippen or Krämer, as applied
to claim 20 above, and further in view of Lisiecki. As claim 25 has
been found unpatentable under either of the unappealed 35 U.S.C.
§ 112 and § 314 rejections, we dismiss this appeal as to claim 25.
Rejections 6, 7, 8, and 9, are modified as discussed below to
rely on Buchner with regard to the residual requirement of claims 18,
19, 6, and 9. See, e.g., RAN 91.
For ease of reference, we reproduce Claim 1 as follows:
1. A method for automatically aseptically bottling
aseptically sterilized foodstuffs comprising the steps of:
providing a plurality of bottles;
aseptically disinfecting the bottles at a rate greater than
100 bottles per minute wherein the disinfecting is with hot
atomized hydrogen peroxide, wherein said plurality of bottles are
in an upright position during disinfecting; and
aseptically filling the bottles with aseptically sterilized
foodstuffs.

The Examiner has found that Buchner describes a method for
automatically aseptically bottling aseptically sterilized foodstuffs by
providing a plurality of bottles, aseptically disinfecting the bottles at a
rate greater than 100 bottles/minute, disinfecting with hot hydrogen
peroxide, and aseptically filling the aseptically disinfected bottles with
the sterilized foodstuffs. RAN 80–81. The Examiner found that
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Buchner does not describe that the “foodstuffs are ‘aseptically’
sterilized to the FDA’s levels.” Id. at 81.
The Examiner has additionally found that Campden describes
presterilization of foodstuffs before packaging them is a prerequisite,
and that the degree of sterilization of the foodstuffs is discussed to the
degree that a 12 log reduction in C. botulinum is achieved. Id.
The Examiner then concludes that it would have been obvious
to have aseptically sterilized the foodstuffs before packaging, as
taught by Campden, as this assures a safer, more stable product. Id.
The Examiner also found that Buchner does not describe that
the bottles are in the upright orientation during disinfecting. Id. The
Examiner found that Gustafsson described that it was known to
disinfect containers in an upright orientation, and concludes that it
would have been obvious to have modified Buchner to disinfect the
bottles in the upright orientation, in view of Gustafsson, as this has
been shown to obviate being forced to turn the bottle over after
disinfecting the bottle in order to fill it. Id. at 81–82.
The Examiner lastly found that Buchner fails to describe that
the hydrogen peroxide spray is atomized. The Examiner found that
ZFL, Rippen, and Krämer describe spraying vaporized hydrogen
peroxide onto bottles, carried by air or steam. Id. at 82.
The Examiner then concluded that “[i]t would have been
obvious for Buchner to have used a hot hydrogen peroxide spray to
aseptically disinfect the bottles because it would have been an obvious
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design choice as it was well known to have been used for such a
purpose.” Id.
The Examiner has also found that the claimed disinfecting rate
of the bottles being greater than 100 bottles per minute is described by
Buchner, but as being in a future production plant not yet in
production. The Examiner has found that Buchner, Gustafsson, and
ZFL describe the concept of adding additional lines to increase
production. Id. at 83–84.
The Examiner concludes that “[i]t would have been obvious to
have added more lines or parallel lines to Buchner’s aseptic bottling
plant, as it would merely allow the plant to increase its production. It
would amount to an obvious predictable result from such a
modification.” Id.
We also observe, to the extent residual sterilent is an issue in
the claims, that Bjerborn, already of record in this proceeding, teaches
that following disinfecting of plastic containers using hot hydrogen
peroxide spray to a level producing a 5 log reduction B. subtilis,
(which is >10 log reduction of C. botulinum), the residual level of
hydrogen peroxide is less than 0.5ppm. See, e.g. RAN 77
Appellant urges that the Examiner’s finding is a “concept” that
would have made adding parallel lines obvious to try, at best.
According to Appellant, the Examiner fails to identify any details that
would allow the person of ordinary skill to achieve the “concept.” PO
Br. 20.
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According to Appellant the references cited by the Examiner do
not provide any details that provide a person of ordinary skill in the
art with any reasonable expectation of success. Id. Appellant asserts
that the Examiner has failed to provide any explanation as to how the
addition of parallel processing lanes would actually be achieved, and
that such detail is necessary to move the Examiner’s argument from a
“concept” to a roadmap that would provide a reasonable expectation
of success. Id.
We disagree. The Examiner has observed that Buchner
described the addition of lanes to increase output was known. See,
e.g., Buchner, at pages 10-1117 where it is described that

Production Machines

The experience obtained with the prototype plant will
make it possible to construct aseptic machines with
variations:

- if the plants are only used for acidic goods, the sterillser
machine could be equipped so it operates by the method
applied at Hypa-S (sterilisation with a mixture of hot air
and steam).

17 Appellant correctly points out that we inadvertently misquoted from
the wrong reference. Reh’g Req. 17-18. We have corrected that error
in this decision. We therefore decline to designate this a new ground
of rejection.
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- increased output: in the next step output ls increased to
6,000 per hour with a maximum filling volume of 1 litre,
a 9-line steriliser machine being used. Further
planning anticipates an lncrease to 12,000 per hour.

The Examiner has put forth sufficient evidence that addition of
lanes is described in Buchner. That the faster machines are under
commercial development does not change the finding that adding
additional lanes to increase output was in fact previously described to
those of skill in the art.
Appellant counters that its witnesses testify that one would not
know “[where to] begin” to develop the aseptic bottler. PO App. Br.
21. As noted above, this is unpersuasive.
Sastry Declaration
Appellant next relies upon the Declaration of Dr. Sudhir Sastry.
According to Appellant, Dr. Sastry concurs with Mr. Taggart in that if
he were provided the disclosure of Bosch with Gustafsson or ZFL he
would not have been able to practice the claimed sterilization speeds
without extensive research and development. PO Br. 22.
The central portion of his testimony is as follows:
14. I have reviewed claims 18 and 19 of the ’013 patent
and am of the opinion that if I were provided with the teachings
of Bosch and Kramer at the time this patent was filed, I would
not be able to practice this invention without extensive research
and development. Even if Bosch and Kramer in combination
teach methods of package sterilization and removal of hydrogen
peroxide; they do not provide the critical guidance of how to
accomplish these at high speed in a bottle or without damaging
the bottle materials. Towards that end, the ’013 patent
specifically teaches the use of a relatively low temperature,
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typically around 55 degrees Celsius (131 degrees Fahrenheit),
which is the temperature of softening of polyethylene
terephthalate (PET) which is used for bottles, and also shows
how to accomplish the entire drying operation in about 24
seconds per claims 2 and 3, which have already been accepted
by the examiner. The Bosch and Kramer combination provides
no such teaching.

Sastry Decl. ¶ 14.
We find this testimony also to be unpersuasive. First, neither of
claim 18 and 20 requires PET. Although left untestified to, we are
reasonably confident that this testimony concerning softening of
bottles is irrelevant if the bottle material is glass. Second, the 24
second drying time is not contained in claim 18. Third, the removal
of hydrogen peroxide is not expressly contained in claim 18, and even
if it is deemed required, the residual level is taught by Bjerborn,
Bosch and Kramer, as found by the Examiner. (“Kramer taught that
hydrogen peroxide could be used to achieve a 6 log reduction in spore
organisms and such teaching can be incorporated into Bosch. RAN
15.) All of these “critical” teachings are not particularly relevant to
broad claim 18.
Dr. Sastry further testifies that Krämer would not work for
disinfecting bottles. Sastry ¶ 19. In essence, Dr. Sastry sets up a
“straw man” argument by taking the Krämer application process of
rolling and saying it would not work for bottles. Id.
We find this to be unpersuasive as Bosch p. 2–3 teaches spray
application within the bottle followed by air drying. One of ordinary
skill in the art is presumed to have some minimal skill. See In re
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Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985). “A person of ordinary
skill is also a person of ordinary creativity, not an automaton.” KSR,
550 US at 421. His testimony that he would not be able to practice
this invention without “extensive research and development” cites to
many features not contained within the claims that define the subject
matter of the invention. PO App. Br. 22 (citing Sastry Decl. ¶ 27).
According to Appellant, Dr. Sastry testifies that Buchner lacks
any teaching as to how a person of ordinary skill in the art would
“effectively coat the interior and exterior of a bottle” or how sterilant
can be effectively removed in such a way as to ensure that less than
0.5 ppm remains on the bottle to comply with FDA regulations. Id.
We disagree with Dr. Sastry’s characterization of the art as a
whole. As found by the Examiner, the affidavit testimony fails to take
into account the disclosures of Bosch, Buchner, and ZFL. RAN 12.
For Example, Buchner at p. 418 describes the following:
Methods Selected by Us for Sterilizing Containers and Caps
The containers are sterilized on either side following
preheating with hydrogen peroxide at effective temperatures
between 50 and 70°C. Two different methods have been
developed for the removal of residual peroxide following the
respective contact time:
- rinsing on either side with sterile water that is in turn
blown off again by sterile air;
- drying using hot sterile air.

18 Appellant correctly points out that we inadvertently misquoted from
the wrong reference. Reh’g Req. 17-18. We have corrected that
error. We decline to designate this a new ground of rejection.
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And at Buchner p. 6:

Plant:
Figure 1 shows the plant. It is U-shaped and composed of a
supply and inlet, 6-line bottle sterilizer, 6-point intermittently
operating piston filler and a modified white-cap sealing
machine. An 'aseptic module' contains the supply units for the
required media, such as hydrogen peroxide, sterile water and
sterile air.
Figure 2 shows a view inside the 6-line sterilizer machine for
the bottles. Whilst being transported in an oval system and
following preheating with sterile air at one station, the bottles
are sprayed on either side with hydrogen peroxide at 3 stations
for approximately 15 sec. Four further stations are provided
for the seconda1y action of the hot peroxide. The bottles are
then washed out extemally at 1 station and intemally at 3
stations with sterile water and blown out again with sterile air
at a fiuther station. The bottles are then transported to the inlet
of the filling machine.
And at Buchner Page 27:

Residual Peroxide
Depending on the mode of operation of the plant and the bottle
size, residual peroxide values are achieved that are below 0.5
or considerably less than 1 ppm.

Microbiological State of the Bottles and Influence on the
Result

Figure 3 shows the admissible mean bacterial count if a
maximum of one non-sterile bottle in 10,000 is allowed at
different levels of sterilization. At a reduction rate of 5 D for
the microorganisms present, a mean contamination of 10
germs per bottle including the seal would be admissible and
32 germs per bottle at 5.5 D. Additional security is provided
since the detected degermination rate does not apply to the
less-resistant flora of microorganisms present, but to the most
resistant germ Bacillus subtilis.
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Buchner and ZFL (which are similar) teach which variables to
adjust in order to achieve FDA sterility rates and residual hydrogen
peroxide. Accordingly, we find Dr. Sastry’s testimony to be counter
to the weight of evidence of record as regards Buchner and ZFL.19
Appellant also urges that Dr. Sastry explains, “in order to add
lines to a machine, I first must be taught how to construct the
machine.” PO Br. 23 (citing Sastry Decl. ¶ 33). Appellant urges that
the complex field of aseptic processing and packaging requires one be
provided with a working example before any modifications can be
made to a method.
We are unpersuaded by this contention. Appellant urges that
complexity in an aseptic bottle filler resides in the fluid dynamics
within the pressurized sterile tunnel. PO Br. 23. However, we
observe that the claims do not require a sterile tunnel. Claims 1, 18,
19, and 21 as written are broad enough to cover an apparatus
functioning in a sterile room, such as that described in Buchner.20

19 Appellant urges that pointing to Buchner and ZFL and the
descriptions therein renders this discussion a new ground of rejection,
even though responding to the argument made on appeal. Reh’g Req.
12–13. We disagree. The Examiner relied on the description of these
references. RAN 12.

20 Appellant urges that this is a finding made for the first time which
requires designation of this as a new ground of rejection. Reh’g Req.
15. We disagree. The “aseptic chamber” discussed in the briefs and
the asserted complexities are unclaimed limitations, rendering the
argument made on appeal meritless.
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Appellant points to a parallel processing lane machine that
Dr. Buchner testified to as evidence of the lack of a reasonable
expectation of success. Dr. Buchner’s testimony is as follows:
22. For example, in a case where we were making a machine
with a number of lines we found that the air-pressure dropped
from nozzle to nozzle across the first lines and at the end the
pressure increased again. You have to make sure that you have
at every station sufficient sterilizing agent for sterilizing and a
sufficient temperature for the activity of the sterilizing medium
and also sufficient air for drying with a sufficient temperature for
removing the sterilizing medium in order to be below the
hydrogen peroxide limit of 0.5 ppm.

Dr. Buchner seems to have faced an engineering challenge in
adjusting pressure across a distribution manifold. We do not find this
testimony sufficient to deem aseptic processing generally
unpredictable.
Appellant next turns to the testimony of Dr. Philip Nelson.21
Appellant asserts that “Dr. Nelson explains that Buchner fails to
describe how to sterilize a bottle to FDA standards including an
acceptable residual hydrogen peroxide level without undue
experimentation, including in achieving a 6 log reduction.” PO Br. 25
(citing Nelson Decl. ¶¶ 33–37). Among the issues raised by

21 Appellant requests that this be designated a new ground of rejection
where the Board delved into the witness’ credibility. Reh’g Req. 7.
While we disagree with that contention, we need not address that issue
as it is unnecessary to the decision, and remove it to simplify the
issues on appeal.

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Dr. Nelson is that a cup and a bottle have different shapes, Buchner
does not teach how to construct an aseptic bottle filler, and the effort
would require undue experimentation. PO Br. 25–26.
The Examiner determined that the declarations are filled with
beliefs and opinions unsupported by factual data, and when accorded
the weight given to such declarations they have been found to be
insufficient in probative value to overcome the findings of
obviousness by a preponderance of the evidence. RAN 44-45.22
We are of a similar view. Dr. Nelson speaks in generalities:
“there are many factors [one] need[s] to consider, both foreseen or
unforeseen.” Br. 25, citing Nelson Decl. ¶ 67. We therefore agree
with the Examiner that this testimony of Nelson is likewise
unpersuasive.
Appellant urges that as the Patent Owner offered four experts
and the Third Party Requestor none, the Examiner erred in
maintaining the rejection. PO Br. 25.
While we understand that there are engineering challenges in
constructing a machine, the art of record reflects a level of skill such
that one of ordinary skill would understand how to handle these
engineering challenges. While the work might be substantial, we find
the evidence presented does not support Appellant’s argument that the

22 Appellant asserts that the Examiner considered the declarations and
criticized them only on secondary considerations. Reh’g Req. 7,
citing RAN 36. This assertion does not accurately reflect the record.
See, e.g. RAN 44-45.
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Examiner erred in not finding it rises to the level of establishing
unpredictability or undue experimentation. As regards the four
witnesses, we observe that each of their analyses tends to overlook the
level of skill in the art and the actual substance of the description of
the references of record, noting only the difficulties they can see and,
as noted by the Examiner, reaching conclusory statements contrary to
the other evidence of record.
Separately Argued Claim 19
Claim 19 reads as follows:
19. A method for automatically aseptically bottling
aseptically sterilized foodstuffs comprising the steps of:
providing a plurality of bottles;
aseptically disinfecting the bottles at a rate greater than
100 bottles per minute, wherein the aseptically disinfected
plurality of bottles are sterilized to a level producing at least a 6
log reduction in spore organism; and aseptically filling the
bottles with aseptically sterilized foodstuffs.

Claim 19 is rejected (in rejection 7) under 35 U.S.C. § 103(a) as
being unpatentable over Buchner, Campden, Gustafsson, ZFL, and
either Rippen or Krämer.
By adoption from the original reexamination request, pages 39-
40, the Examiner initially found that:
Kramer teaches sterilization of aseptic packaging using
hydrogen peroxide to kill the spore organism Bacillus subtilis at
a 6 log reduction (page 165). One skilled in the art would be
motivated to combine the teachings from Kramer and Bosch
because the references relate to the same field of technology
and subject matter for rocessing food using the same sterilizing
agent under aseptic conditions. One skilled in the art would be
further motivated to combine the teachings in Kramer with
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Bosch to minimize the level of microorganisms present on the
bottles for aseptic processing.
Furthermore, reaching or obtaining a specific value is not
patentable subject matter when it involves only routine
experimentation by the skilled artisan. Ecolab, Inc. v. FMC
Corp., 569 F.3d 1335, 1349, fn. 2 (Fed. Cir. 2009) (holding “at
least a one log10 reduction in microbial population” not
patentable as obvious).
IP Reex. Request, 40.
The Examiner further found that Bosch describes a plurality of
bottles; disinfecting the bottles with hydrogen peroxide; and filling the
bottles with aseptically sterilized foodstuffs. RAN 75. Kramer was
found to describe disinfecting foodstuff containers to a 6 log reduction
in B. subtilis spores and a 12 log reduction in C. botulinum spores by
spraying hot atomized (steam) hydrogen peroxide. RAN 75–76.
The Examiner concluded that it would have been obvious to
have sterilized the containers to a level producing at least a 6 log
reduction in spore organisms, thus meeting the aseptic disinfection of
the bottles limitation, because this prevents contamination of the
foodstuff, even if it were aseptically sterilized before filling into the
container, because putting sterilized foodstuff into a container that is
not aseptic allows for growth of organisms. RAN 76. In terms of the
rate, the Examiner found addition of lines to be sufficient. Id.
Appellant asserts that Krämer’s disclosure is insufficient to
teach how a 6 log reduction would be obtained. Appellant urges that
Dr. Buchner testified that “sterilization of bottles is much more
difficult than sterilization of film-webs or other packages like cans,
cups and cartons because of the surface geometry of the bottle.” PO
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Br. 27 (citing Buchner Decl. ¶14). Given this difficulty, Appellant
urges error in that the Examiner did not identify a solution to the
problem.
We are unpersuaded of this allegation of error. As noted in the
original request, adopted by the Examiner, reaching the claimed value
is not patentable. Appellant has not provided sufficient persuasive
evidence to the contrary. Accordingly, we disagree with Appellant as
regards claim 19.23
Separately Argued Claim 6
Claim 6 reads as follows:
6. The method according to claim 5, wherein the plastic is
selected from the group: polyethyelene terephthalate, and high density
polyethyelene.

Claim 5, from which claim 6 depends, reads as follows:
5. The method according to claim 1, wherein the plurality of
bottles are made from a plastic.

Claim 6 is rejected (in Rejection 8) under 35 U.S.C. § 103(a) as
being unpatentable over Buchner, Campden, Gustafsson, ZFL, either
Rippen or Krämer, as applied to claim 5, and further in view of
Miyazaki or Willhoft.

23 Appellant appears to urge that the discussion of result effective
variables in the original decision on appeal warranted designation of
this as a new grounds of rejection. Reh’g Req. 14-17. As we have
determined the Examiner’s original grounds sufficient, and any
additional comments unnecessary, we delete the prior additional
reasoning to simplify the issues herein.
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The Examiner has found that Buchner does not describe a
polyethylene terephthalate plastic bottle. However, the Examiner has
found that Miyazaki teaches that PET bottles can be used to
aseptically package. The Examiner then concludes that it would have
been obvious to one having ordinary skill in the art at the time of the
invention to have used a polyethylene terephthalate plastic bottle for
the generically disclosed plastic bottle of Buchner, as this material
has been shown to reduce plastic bottle costs. RAN 92–93.
Appellant argues that the natural tendency is to simply increase
temperature to increase sterilization. PO Br. 28. It is urged that when
lightweight plastic bottles such as PET or HDPE are used,
temperature cannot simply be increased because PET and HDPE
bottles have relatively low melting points. Id. at 28–29.
Miyazaki is said by Appellant to be silent as to sterilization
rates, and operate in a different manner. Miyazaki is also said to be
silent as to how the polyethylene terephthalate bottles are sterilized
such that the softening point is avoided. Id. at 29.
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Appellant then concludes that a person of ordinary skill in the
art would not have had any reasonable expectation of success in doing
so. Id.24
We accept Appellant’s underlying assertion that deformation of
polyethylene terephthalate bottles during sterilization is to be avoided.
However, Miyazaki itself contradicts Appellant’s argument and
teaches the benefits of aseptically filling a non-heat resistant bottle
over hot filling a heat-resistant bottle. Miyazaki 2. We therefore are
unpersuaded of error. Moreover, it appears from the art of record that
one of ordinary skill in the art would also have been aware of using
plastic during sterilization and filling procedures. See, e.g., ZFL’s

24 Appellant urges reliance on the unentered Spinak Transcript from
IPR2014-00041 for support for the proposition that one of ordinary
skill in the art would not modify “ZFL/Bosch with Miyazaki.” Br. 30.
Counsel for Appellant asserted the transcript was considered by the
Examiner December 19, 2014. Br. 53. We initially declined to
consider this evidence as unconsidered. Dec. 43 fn. 4. On rehearing,
Appellant urges that ‘the Board was required to consider” the Spinak
deposition transcript. Reh’g Req. 1. Appellant’s counsel again
asserts “the Examiner did in fact enter and consider the Spinak
transcript on December 19, 2014 by initialing the corresponding entry
on a list of references considered by the Examiner.” Id. While
submission of a document in an information disclosure statement does
act to include the transcript in the record, such inclusion is in an
entirely different context than raising an argument before an
Examiner. Nevertheless, to simplify the issues on appeal, we look at
the Spinak transcript as part of this rehearing request.

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discussion of polyethylene terephthalate bottles thermal stress limit of
74 degrees C. ZFL, 2.25
We also consider the Spinak testimony, raised by Appellant for
the first time on appeal. Appellant urges that a person of ordinary
skill in the art “would not even consider incorporating any disclosure
of Miyazaki into the Bosch references because it would entail
designing an entirely new system.” Br. 29-30, citing Spinak
Deposition Testimony 250-253. While such constraints may present a
technical challenge or problem to be surmounted, we do not agree
with Appellant that the Examiner erred in determining one of ordinary
skill in the art would have had a reasonable expectation of success in
aseptic sterilization of polyethylene terephthalate bottles.
To the contrary, in a prior section of testimony, Mr. Spinak
seems to state precisely the opposite:
Q. I'm only halfway through my question. Let me give it
another shot. Could one modify the ZFL process or the Bosch
process, and those were described in Exhibits 1020 and 1005,
respectively. We discussed those earlier in the morning.

A. Um-hum.

Q. Could one modify those processes to achieve higher
sterilization rates by applying some technique borrowed from
the Miyazaki references?

25 Appellant makes the argument that because the Board relied upon
Miyazaki and ZFL to find the argument made unpersuasive, the
ground must be designated a new ground of rejection. Reh’g Req. 20.
As the rejection is over both Miyazaki and ZFL, and is consistent with
the Examiner’s initial findings, we disagree.
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A. Well, if you're talking about accumulation technique --

Q. Any technique disclosed by Miyazaki.

A. I suppose they could try it. They could try it. I think they
could do it. Again, are you talking about a design, the Bosch
design, or are you given a Bosch machine?

Q. My question is if one were to start with the Bosch machine
and one were to be tasked with improving its throughput, could
one improve its throughput by applying any of the concepts or
techniques taught in the Miyazaki references? If so, how?

A. I suppose it's doable. I don't even know why they would
even want to do that. They have such an effective design in
terms of what they do. I love their design. So why would they
even have to worry about that?

Spinak Deposition Transcript, 247:10–248:16. (Emphasis added).

Further:

Q. Okay. Let's return, though, to – to the question. Given the
nature of the designs and, in particular, the ZFL and Bosch
process on the one hand and the Miyazaki process on the other,
could you augment the ZFL or Bosch process to make it faster
by applying some technique taught in Miyazaki?

A. You could do it. You could try it.

Spinak Deposition Transcript 250:14–21.

It was only on his third try at questionioning that counsel
obtained a statement that appears to be the foundation for the position
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advanced. Accordingly, the argument has little persuasive value, we
are unpersuaded of error, and affirm these rejections.
3. ZFL (Rejections 11, 13–25)
(Rejection 11) Claims 26 and 29 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over ZFL, Krämer, Lisiecki,
and Campden. As these claims all have been found unpatentable
under either the unappealed 35 U.S.C. § 112 and § 314 rejections, we
dismiss this appeal as to this rejection.
(Rejection 13) Claims 30, 31, 33, 34, 35, and 39 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over ZFL and
Gustafsson. As these claims all have been found unpatentable under
either the unappealed 35 U.S.C. § 112 and § 314 rejections, we
dismiss this appeal as to this rejection.
(Rejection 14) Claim 32 stands rejected under 35 U.S.C.
§ 103(a) as being unpatentable over ZFL and Gustafsson, as applied to
claim 30, and further in view of David. As this claim has been found
unpatentable under either the unappealed 35 U.S.C. § 112 and § 314
rejections, we dismiss this appeal as to this rejection.
(Rejection 15) Claim 21 stands rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over ZFL, Hada, and
Bjerborn. This rejection was adopted by the Examiner in the RAN
page 99, citing the Requester’s December 28, 2012 response, pages
41–43 and Exhibit G, pages 1–3.
(Rejection 16) Claim 24 stands rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over ZFL, Hada, Bjerborn
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and Vokins. This rejection was adopted by the Examiner in the RAN
page 99, citing the Requester’s December 28, 2012, response, page 48
and Exhibit G, page 6.
(Rejection 17) Claim 25 stands rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over ZFL, Gustafsson,
Clüsserath, Bjerborn, and Lisiecki. As this claim has been found
unpatentable under either the unappealed 35 U.S.C. § 112 and § 314
rejections, we dismiss this appeal as to this rejection.
(Rejection 18) Claim 26 stands rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over ZFL, Bjerborn, and
Lisiecki. As this claim has been found unpatentable under either the
unappealed 35 U.S.C. § 112 and § 314 rejections, we dismiss this
appeal as to this rejection.
(Rejection 19) Claim 29 stands rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over ZFL, Bjerborn,
Lisiecki, and Vokins. As this claim has been found unpatentable
under either the unappealed 35 U.S.C. § 112 and § 314 rejections, we
dismiss this appeal as to this rejection.
(Rejection 20) Claims 30, 31, 33, 34, 35, 38, 39, 51, 53, 55, 58,
and 60 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over ZFL and Bjerborn. This rejection was adopted by
the Examiner in the RAN page 100, citing the Requester’s December
28, 2012 response, pages 54–55 and Exhibit G, pages 14–17. As
claims 30, 31, 33, 34, 35, 39, 55 and 60 have been found unpatentable
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under either the unappealed 35 U.S.C. § 112 and § 314 rejections, we
dismiss this appeal as to those claims of this rejection.
(Rejection 21) Claim 32 stands rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over ZFL, Bjerborn, and
David. As this claim has been found unpatentable under either the
unappealed 35 U.S.C. § 112 and § 314 rejections, we dismiss this
appeal as to this rejection.
(Rejection 22) Claim 44 stands rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over ZFL, Clüsserath, and
Gustafsson. As this claim has been found unpatentable under either
the unappealed 35 U.S.C. § 112 and § 314 rejections, we dismiss this
appeal as to this rejection.
(Rejection 23) Claim 45 stands rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over ZFL, Lisiecki,
Hoshino, Wilcox, and Bosch. This rejection was adopted by the
Examiner in the RAN page 103, citing the Requester’s December 28,
2012 response, pages 59–60 and Exhibit G, page 22. As this claim
has been found unpatentable under either the unappealed 35 U.S.C. §
112 and § 314 rejections, we dismiss this appeal as to this rejection
(Rejection 24) Claims 46–48 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over ZFL and Bosch. As these
claims all have been found unpatentable under either the unappealed
35 U.S.C. § 112 and § 314 rejections, we dismiss this appeal as to this
rejection.
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(Rejection 25) Claims 50, 52, 54, 57, 59, and 62–65 stand
rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over
ZFL. This rejection was adopted by the Examiner in the RAN page
104, citing the Requester’s December 28, 2012 response, page 62 and
Exhibit G, page 25. As claims 59 and 62–65 have been found
unpatentable under either the unappealed 35 U.S.C. § 112 and § 314
rejections, we dismiss this appeal as to those claims of this rejection.
As discussed above, rejection 25 (claims 50, 52, 54, and 57) is
modified to rely on Bjerborn for the residual requirement.
In these rejections, the Examiner generally found that ZFL
describes an aseptically working plant using hydrogen peroxide
sterilant with a single conveying apparatus at maximum output of 200
bottles per minute. The additional references are cited by the
Examiner to meet certain additional limitations. Requester’s
December 28, 2012, Response, pages 41–43 and Exhibit G, pages 1–
3. Bjerborn is as described above.
Appellant has addressed some general argument towards these
rejections in that it has asserted that the ZFL author, Dr. Buchner,
withheld details such that one of ordinary skill in the art would not
have a reasonable expectation of success, and only rendered the
claims obvious to try. PO Br. 16–18. We find this argument
unpersuasive for the reasons noted above.
Moreover, ZFL expressly describes dual line plants, and
Appellant has not shown with sufficient persuasive evidence that one
of ordinary skill in the art, armed not only with their background
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knowledge of aseptic processing, but also with the specific teachings
of multi-lane machines to improve processing output, would not have
a reasonable expectation of success.
As regards Dr. Sastry’s specific testimony regarding the ZFL
description, the lack of specifics for time and temperature for
application of a sterilant (PO Br. 22 (citing Sastry ¶ 32)), we observe
that the only claims on appeal with a time limitation are claims 30, 37,
49, 56, and 61, which recite either “at least 5 seconds” to break down
the sterilant (claim 30) or “about 24 seconds” to activate and remove
the sterilant. However, only one of these claims rejected in these
rejections (claim 30) recites a time period. Claim 30 is rejected in
rejection 13 (ZFL and Gustafsson) and rejection 20 (ZFL and
Bjerborn).
We disagree with Appellant and Dr. Sastry that every detail
needs to be described in order to give a reasonable expectation of
success. We specifically disagree with Dr. Sastry’s statement that
ZFL “lacks any detail to demonstrate how those achievements have
been and could be met.” PO Br. 22 (citing Sastry Decl. ¶ 32). ZFL
gives the basic machine structure in the description and Figures 1–7
and outlines general operating conditions. Moreover, in stark contrast
to the supplied testimony, ZFL describes managing conditions
routinely to get the appropriate sterilization rates. The conditions are
recited on page 5 of ZFL, reproduced below:
The sterilizing conditions such as flow velocity,
temperature and peroxide concentration, may be adapted to the
requirements for different containers. Figure 3 shows the
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individual treating zones in the sterilizing machine. Very high
sterilizing rates can be achieved. In adjusting them practically,
they will be reduced to the realistic requirements in order to
avoid unnecessary consumptions so that the following
minimum results will be achieved:
- Sterilization of containers and lids: >5D
- Residual peroxide in the containers: <0.5 ppm
- Peroxide concentration in the working
environment: <1 ppm
- Maximum of unsterility rate: 1: 10,000.

Bjerborn describes different ventilation times for gassing,
holding, and ventilating (3 seconds, 1 second, 10 seconds) with
adjustment “in such a way that all visible condensate had evaporated.”
Bjerborn p. 5 ll. 29–31. The results were a reduction of “at least log
5.” Id. at p. 6. Dr. Sastry fails to discuss how this combination of
references would fail to inform one of ordinary skill in the art and as a
consequence his testimony remains unpersuasive.
Separately Argued Claim 52
Claim 52 depends from claim 19, and both are reproduced
below for ease of reference.
19. A method for automatically aseptically bottling
aseptically sterilized foodstuffs comprising the steps of:
providing a plurality of bottles;
aseptically disinfecting the bottles at a rate greater than
100 bottles per minute, wherein the aseptically disinfected
plurality of bottles are sterilized to a level producing at least a 6
log reduction in spore organism; and aseptically filling the
bottles with aseptically sterilized foodstuffs.

52. The method according to claim 19, wherein the
plurality of bottles are made from polyethyelene terephthalate.

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Appellant urges that ZFL fails to describe a 6 log reduction, and
“any art” cited against claim 52 must teach a 6 log reduction. PO Br.
33. The basis for this assertion is that ZFL’s Table 1 does not reflect
the claimed subject matter because the upstream rinser is not used
when plastic bottles are being processed by the system. PO Br. 32.
This argument lacks persuasive merit. The ZFL containers are
sterilized to a level greater than 5 log and ZFL describes target rates,
because excessive rates of sterilization (i.e. too far above 5) would
result in a waste by excess consumption.. See, e.g., ZFL26 p. 5, ll. 5–
10, Armed with this teaching, we see no error in the Examiner’s
conclusion that a 6 log reduction (even on a logarithmic scale) would
have been obvious.
As a consequence, we affirm these rejections.
Secondary Considerations
The RAN, page 33, references a discussion of secondary
considerations proffered by Appellant during prosecution. However,
we are unable to find this issue raised and discussed in Appellant’s
briefs. Accordingly, we deem it waived.

26 The prior decision erroneously referenced Bjerborn. That evident
typographical error has been corrected. We therefore decline to
designate this a new ground of rejection, as requested by the Patent
Owner. Reh’g Req. 18–19.
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CONCLUSION
Having not been persuaded of error by the Examiner, we
sustain the rejections of record. Having been shown that we
overlooked that we cited the ZFL reference in place of the Buchner
reference in our prior decision, we GRANT IN PART the request for
rehearing and withdraw that decision, replacing it with this one. We
designate certain grounds of rejection as new grounds of rejection, as
more further described below.

ORDER

1. The rejection of claims 18 and 19 under 35 U.S.C. § 103(a)
as being unpatentable over Bosch,Krämer, and Bjerborn is affirmed,
and is designated as a new ground of rejection.
2. The rejection of claim 20 under 35 U.S.C. § 103(a) as being
unpatentable over Bosch and Bjerborn is affirmed.
3. The rejection of claim 20 under 35 U.S.C. § 103(a) as being
unpatentable over Bosch in view of FDA Regulation 21 C.F.R.
§ 178.1005 and Bjerborn is affirmed, and designated as a new ground
of rejection.
4. The rejection of claim 21 under 35 U.S.C. § 103(a) as being
unpatentable over Bosch, Bjerborn, and Lisiecki is affirmed.
5. The rejection of claim 24 under 35 U.S.C. § 103(a) as being
unpatentable over Bosch, Bjerborn, and Lisiecki is affirmed.
6. The rejection of claims 1, 4, 5, 7, 8 and 10–17 under 35
U.S.C. § 103(a) as being unpatentable over Buchner, Campden,
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Gustafsson, ZFL, Bjerborn, and Rippen or Krämer is affirmed, and is
designated as a new ground of rejection.
7. The rejection of claims 18–20 under 35 U.S.C. § 103(a) as
being unpatentable over Buchner, Campden, Gustafsson, ZFL,
Bjerborn, and Rippen or Krämer is affirmed, and as to claims 18 and
19, the rejection is designated as a new ground of rejection.
8. The rejection of claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Buchner, Campden, Gustafsson, ZFL, Bjerborn,
and either Rippen or Krämer, as applied to claim 5, and further in
view of Miyazaki or Willhoft is affirmed, and is designated as a new
ground of rejection.
9. The rejection of claim 9 under 35 U.S.C. § 103(a) as being
unpatentable over Buchner, Campden, Gustafsson, ZFL, Bjerborn,
and either Rippen or Krämer, as applied to claim 5, and further in
view of Willhoft or Scholle is affirmed as a new ground.
10. The rejection of claims 21, 24, and 25 under 35 U.S.C. §
103(a) as being unpatentable over Buchner in view of Campden,
Gustafsson, ZFL, and either Rippen or Krämer, as applied to claim 20
above, and further in view of Lisiecki is affirmed as to claims 21 and
24, and dismissed as to claim 25.
11. The appeal of the rejection of claims 26 and 29 under 35
U.S.C. § 103(a) as being unpatentable over ZFL, Krämer, Lisiecki,
and Campden is dismissed.
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12. The rejection of claims 30, 31, 33, 34, 38, and 39 under
35 U.S.C. § 103(a) as being unpatentable over Bosch, Lisiecki,
Buchner, Bjerborn, Gustafsson, and Willhoft is dismissed.
13. The appeal of the rejection of claims 30, 31, 33, 34, 35, and
39 under 35 U.S.C. § 103(a) as being unpatentable over ZFL and
Gustafsson is dismissed.
14. The appeal of the rejection of claim 32 under 35 U.S.C.
§ 103(a) as being unpatentable over ZFL and Gustafsson, as applied to
claim 30, and further in view of David is dismissed.
15. The rejection of claim 21 under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over ZFL, Hada, and Bjerborn is affirmed.
16. The rejection of claim 24 under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over ZFL, Hada, Bjerborn, and Vokins is
affirmed.
17. The appeal of the rejection of claim 25 under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over ZFL, Gustafsson,
Clüsserath, Bjerborn, and Lisiecki is dismissed.
18. The appeal of the rejection of claim 26 under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over ZFL, Bjerborn, and
Lisiecki is dismissed.
19. The appeal of the rejection of claim 29 under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over ZFL, Bjerborn,
Lisiecki, and Vokins is dismissed.
20. The rejection of claims 30, 31, 33, 34, 35, 38, 39, 51, 53,
55, 58, and 60 under pre-AIA 35 U.S.C. § 103(a) as being
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unpatentable over ZFL and Bjerborn is affirmed as to claims 51, 53,
and 58 and dismissed as to claims 30, 31, 33, 34, 35, 38, 39, 55, and
60.
21. The appeal of the rejection of claim 32 under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over ZFL, Bjerborn, and
David is dismissed.
22. The appeal of the rejection of claim 44 under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over ZFL, Clüsserath, and
Gustafsson is dismissed.
23. The appeal of the rejection of claim 45 under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over ZFL, Lisiecki, Hoshino,
Wilcox, and Bosch is dismissed.
24. The appeal of the rejection of claims 46, 47, and 48 under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over ZFL and
Bosch is dismissed.
25. The rejection of claims 50, 52, 54, 57, 59, and 62_65 under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over ZFL and
Bjerborn is affirmed, and is designated as a new ground of rejection as
to claims 50, 52, 54, and 57, and is dismissed as to claims 59 and 62–
65.
26. The rejection of claims 26, 29, 44–48, 60, and 64–65 under
35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as
failing to comply with the written description requirement is affirmed.
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27. The rejection of claims 25–27, 29–35, 37–39, 49, 55, 56,
60, and 61 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA),
second paragraph is affirmed.
28. The rejection of claims 59–63 under 35 U.S.C. § 314(a) as
enlarging the scope of the claims of the patent being reexamined is
affirmed.
Rehearing of our prior decision is GRANTED inasmuch as that
decision is hereby withdrawn and replaced with the present amended
decision. Certain rejections are designated as new ground of
rejections. The Request for Rehearing is DENIED in all other
respects.
V. TIME PERIOD FOR RESPONSE
Pursuant to 37 C.F.R. § 41.77(a), the above-noted reversal
constitutes a new ground of rejection. Section 41.77(b) provides that
“[a] new ground of rejection . . . shall not be considered final for
judicial review.” That section also provides that Patent Owner,
WITHIN ONE MONTH FROM THE DATE OF THE DECISION,
must exercise one of the following two options with respect to the
new grounds of rejection to avoid termination of the appeal
proceeding as to the rejected claims:
(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner.
Such a response must be either an amendment of the
claims so rejected or new evidence relating to the claims
so rejected, or both.

(2) Request rehearing. The owner may request that the
proceeding be reheard under § 41.79 by the Board upon
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the same record. The request for rehearing must address
any new ground of rejection and state with particularity
the points believed to have been misapprehended or
overlooked in entering the new ground of rejection and
also state all other grounds upon which rehearing is
sought.

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one
month of the date of: . . . [t]he original decision of the Board under §
41.77(a).” A request for rehearing must be in compliance with 37
C.F.R. § 41.79(b). Comments in opposition to the request and
additional requests for rehearing must be in accordance with 37
C.F.R. § 41.79(c)–(d), respectively. Under 37 C.F.R. § 41.79(e),
“[t]he times for requesting rehearing under paragraph (a) of this
section, for requesting further rehearing under paragraph (c) of this
section, and for submitting comments under paragraph (b) of this
section may not be extended.”
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141–144 and 315 and 37 C.F.R. § 1.983
for an inter partes reexamination proceeding “commenced” on or
after November 2, 2002 may not be taken “until all parties’ rights to
request rehearing have been exhausted, at which time the decision of
the Board is final and appealable by any party to the appeal to the
Board.” 37 C.F.R. § 41.81; see also MPEP §§ 2682, 2683 (8th ed.,
Rev. 8, July 2010).
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Requests for extensions of time in this inter partes
reexamination proceeding are governed by 37 C.F.R. § 1.956. See 37
C.F.R. § 41.79.
In the event neither party files a request for rehearing within the
time provided in 37 C.F.R. § 41.79, and this decision becomes final
and appealable under 37 C.F.R. § 41.81, a party seeking judicial
review must timely serve notice on the Director of the United States
Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

REHEARING GRANTED-IN-PART

PATENT OWNER:

OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
Alexandria, VA 22314

THIRD-PARTY REQUESTER:

GIBBONS P.C.
One Gateway Center
Newark, NJ 07102
PATENT TRIAL AND APPEAL BOARD
STANDARD OPERATING PROCEDURE 2 (REVISION 9)
PUBLICATION OF OPINIONS AND
DESIGNATION OF OPINIONS AS PRECEDENTIAL, INFORMATIVE,
REPRESENTATIVE, AND ROUTINE
This standard operating procedure (SOP) addresses the publication of opinions of the
Patent Trial and Appeal Board (Board) and the designation of such opinions as
precedential for the United States Patent and Trademark Office. This SOP also discusses
the designation of Board decisions as informative, representative, and routine. This SOP
creates internal norms for Board administration; it does not create any legally enforceable
rights. The actions described in this SOP are part of the Board's deliberative process.
I. Purpose
A. The people of the United States of America have an interest in the Board's
activities (5 U.S.C. § 552). Since August 1997, this interest has mainly been
addressed through electronic posting of most* final Board opinions (http://e-
foia.uspto.gov/Foia/PTABReadingRoom.jsp).
B. The Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office (Director) has an interest in
providing policy direction and in creating binding norms for fair and efficient
patent examination (35 U.S.C. §§ 2(b)(2) and 3(a)(2)(A)).
C. The Board enters thousands of opinions every year. This volume may
obscure the value of certain electronically posted Board opinions. This SOP
provides a mechanism for highlighting certain opinions by designating Board
opinions as:
1. Precedential,
2. Informative,
* Electronic publication of most opinions depends on whether the underlying application
is entitled to confidentiality (35 U.S.C. § 122). Since November 2000, only a relatively
small number of opinions remain confidential.
3. Representative, or
4. Routine.
II. Nominating an opinion
A. The Board consists of administrative patent judges (judges), including a
Chief Administrative Patent Judge (Chief Judge) and four ex officio
members: the Director, the Deputy Director, the Commissioner for Patents
and the Commissioner for Trademarks (35 U.S.C. § 6(a)).
B. Any member of the Board may recommend to the Chief Judge that an
opinion, including Board decisions and orders, be designated as precedential,
informative, or representative.
C. The appellant, the patentee, a petitioner, or a third party member of the
public may, within 60 days of issuance of the opinion, request in writing that
an opinion be made precedential, by forwarding that request, along with
accompanying reasons, to the Chief Judge. Where a written request for a
precedential opinion has been received, the Chief Judge shall respond in
writing to the requester to confirm receipt of the request.
III. Precedential opinion
A. If the Chief Judge considers a nominated opinion to be an appropriate
candidate for designation as precedential, the Chief Judge will circulate the
opinion to all members of the Board. An opinion may be considered
appropriate for any reason, but particular emphasis will be placed on
opinions resolving conflicts or addressing novel questions.
B. During a stated, limited period (typically ten business days), each Board
member will be invited to vote and will have an opportunity to comment in
writing on whether the opinion should be designated as precedential. The
Chief Judge may share the comments with members of the authoring panel.
C. After the expiration of the period, if a majority of the Board's voting
members agree that the opinion should be made precedential, and after
considering the Board members' comments, the Chief Judge shall notify the
Director of the results of the voting.
D. If the Director concurs that the opinion should be designated precedential,
the Director will so notify the Chief Judge. No opinion may be precedential
without concurrency by the Director.
2 SOP 2, rev. 9
E. The opinion is then published or otherwise disseminated following notice
and opportunity for written objection afforded by 37 C.F.R. § 1.14, in those
instances in which the opinion would not otherwise be open to public
inspection. A precedential opinion is binding authority in subsequent matters
involving similar facts or issues.
F. An opinion designated as precedential under a previous version of this SOP
remains precedential unless overcome by subsequent binding authority.
G. Opinions designated as precedential shall be labeled "Precedential."
Precedential opinions shall be posted electronically on the Board’s Web page
and ordinarily will be sent to commercial reporters that routinely publish
Board opinions.
H. Any Board member may notify the Chief Judge of the member's belief that a
Board opinion designated as "Precedential" has been overcome by
subsequent binding authority. If the Chief Judge determines that the subject
Board opinion has been overcome by subsequent binding authority, the Chief
Judge shall notify the Director of the Board's determination and the basis
therefore. If the Director concurs, the Director will so notify the Chief Judge,
and the subject Board opinion shall be removed from the electronic posting
of "Precedential" opinions. A notice indicating the opinion's removal shall
be posted in its stead.
I. An opinion is not precedential simply because it has been published in a
commercial reporter, involves an expanded panel, or includes an ex officio
member on the panel. Such factors may, however, augment the
persuasiveness of the opinion.
IV. Informative opinion
A. The Chief Judge may designate any nominated opinion as informative unless
it is designated as precedential. An informative opinion is not binding
authority.
B. An opinion may be designated as informative for any reason. Considerations
include:
1. Providing Board norms on recurring issues,
2. Providing guidance on issues of first impression, and
3. Providing guidance on Board rules and practices.
3 SOP 2, rev. 9
C. Opinions designated as informative shall be labeled "Informative." The
Director shall be notified of opinions designated as informative in advance of
their publication as such. Such notification shall include a brief explanation
summarizing the relevant facts that led to the determination of the opinion as
informative. Informative opinions shall be posted electronically on the
Board's Web page and ordinarily will be sent to commercial reporters that
routinely publish Board opinions following notice and opportunity for
written objection afforded by 37 C.F.R. § 1.14, in those instances in which
the opinion would not otherwise be open to public inspection.
V. Representative opinion
A. The Chief Judge may designate any nominated opinion as representative
unless it is designated as precedential. A representative opinion is not
binding authority.
B. Representative opinions typically provide a representative sample of
outcomes on a matter. This designation is used to bring such opinions to the
attention of the public from among the numerous routine decisions issued by
the Board.
C. Representative opinions will be posted electronically on the Board's Web
page.
VI. Routine opinion
A. Every Board opinion is, by default, a routine opinion until it is designated as
precedential or informative. All final Board opinions, except those not open
to public inspection, will continue to be posted electronically (http://e-
foia.uspto.gov/Foia/PTABReadingRoom.jsp). A routine opinion is not
binding authority.
B. An opinion is binding law of the case, even if it is not designated as
precedential, informative, or representative.
4 SOP 2, rev. 9